Thursday, December 18, 2014, 5:07 PM

GREENSBORO, N.C. – Even
in the face of copycats, innovation remains the lifeblood of the home
furnishings industry, and innovators have legal remedies to protect their
designs.

So says Womble
Carlyle’s Jack Hicks,
a veteran IP attorney who has served the home furnishings industry for more
than 25 years. Hicks recently spoke on “Innovation, Impersonation or
Infringement?” at the Furniture Today Leadership Conference, and Furniture
Today was on hand to cover his presentation.

“It is easy to knock
someone off and knock off a bestseller, but if you want to come up with a
one-of-a-kind product, we have laws to protect that,” Hicks said. “If you
innovate, the law will protect you.”

Jack Hicks
has more than 25 years of experience guiding home furnishing and design
companies through all stages of the intellectual property process. He has written, prosecuted and litigated
patents, trademarks and copyrights throughout the world on literally hundreds
of furniture-related designs. A
registered patent attorney, Jack is frequently invited to speak at the US and
Global Patent Academies, Universities and trade groups on the line between
protectable original designs and public domain trends. He is listed in The Best Lawyers in America,
North Carolina Super Lawyers and North Carolina Legal Elite. Jack also is an Adjunct Professor, teaching
courses on intellectual property law and international law and business at the
Elon University School of Law. He is the
Chair of the Solutions Partners Division of the AHFA and practices in Womble
Carlyle’s Greensboro, N.C. office.

Wednesday, December 17, 2014, 9:45 AM

Boyd Lighting's Steampunk Sconce Gets Stock Photo Archive Steamed

On December 16, 2014, Lived In Images, Inc. (d/b/a Hometica) sued Boyd Lighting Fixture Company for copyright infringement in the United States District Court for the Northern District of California (San Francisco Division) (Case No. 3:14-cv-05500). Lived In Images is a stock photo archive specializing in home, garden, and interior design pictures. Lived In Images makes its images available through licensing arrangements. The complaint alleges that Lived In Images registered 5,500 architectural photographs with the U.S. Copyright Office and that Boyd Lighting is using at least two of those images on its website without permission or license. Specifically, the complaint identifies Boyd's "Steampunk Sconce" webpage as containing the allegedly infringing images, one of which is shown below:

Lived In Images requests injunctive and enhanced statutory damages, as well as attorneys' fees and costs.

The case illustrates the importance of regularly registering copyrightable works and the relative simplicity of filing "Group Registration" works, such as the 5,500 images submitted by Lived In Images. The case may also illustrate an example of Boyd's website designer utilizing images (either accidentally or willfully) without license. Boyd may have the ability to turn to its website designer for indemnification. Without doubt, the case illustrates how home furnishing companies must be diligent not only in the design of the products, vis-a-vis the proprietary designs of others, but how they market their designs.

Wednesday, October 8, 2014, 9:22 AM

Plugged-In Furniture - What's Past Is Prologue

As furniture becomes more and more tech-driven (e.g., USB ports, chargers, coolers, etc.) we can sometimes forget that claims to advancements in the basic sofa have been around for some time. Today's Westlaw's "Headnote of the Day" e-mail contained the case headnote "Sitting on a couch is not exercise." This got my attention and warranted a deeper look.

The headnote comes from Stauffer Laboratories, Inc. v. F.T.C., 343 F.2d 75 (9th Cir. 1965). In Stauffer, the Ninth Circuit was asked to review a preliminary injunction directing Stauffer Labs and its principal officer from making claims that use of the "Magic Couch" or "Posture-Rest" sofa results in weight loss. The sofa consisted of a central oscillating section measuring 10 by 15 inches and two larger sections that are attached to opposite sides of the central section. The couch user lies upon it with his head on one attached portion and his legs on another while the central portion of his body is given what was called "effortless exercise" through oscillation of the central portion. The user was also to follow a low-calorie diet! The Ninth Circuit affirmed, finding that ads touting the sofa's ability to reduce "inches and pounds" were deceptive.

Have things changed that much today? Do you know of any "technologically advanced" pieces of furniture that make exceptional claims?

The full text of the "Magic Couch" ads:

‘GET SLIM

STAY SLIM

insist on STAUFFER the only home plan backed by 20 years of reducing success The Stauffer principle has helped more than 5 million women remake their figures.

‘Exercise comes first with Stauffer. But it's effortless exercise—without work or strain— on Stauffer's Magic Couch. This exercise does away with inches * * * tones and firms hard-to-reach problem areas * * * improves posture * * * even reproportions. When you want to lose both inches and pounds, exercise on the Magic Couch is combined with sensible calorie reduction. This brings about results you just can't get from diet alone. And every woman who reduces with Stauffer does it with the help and encouragement of another woman * * * a trained Stauffer counselor.’

‘Greet Summer

With a lovelier figure

How you'll look in a swimsuit depends on how you REDUCE. No longer need heavy hips, thighs, legs and waistline ‘rolls' embarrass you. Beautify your posture, reproportion your figure into more youthful looking, lovelier lines by trimming away unwanted inches with the famous STAUFFER HOME REDUCING PLAN of effortless exercise and calorie reduction. * * *’

‘* * * The Magic Couch (Posture Rest) is the heart of the Stauffer Home Reducing Plan of effortless exercise and calorie reduction. * * *’

‘You lose unwanted pounds.

You lose inches where you need to— from hips, tummy, thighs.

You achieve a graceful, lifted posture.

Your skin fits smoothly— sagging tissue is firmed and toned. * * *‘

‘There is more to the Stauffer Home Plan than just reducing. Rather, it is a complete program of scientific figure control. It not only takes off excess weight, but also removes hard-to-lose inches from ankles, thighs, hips and tummy.

‘For a woman, it tones and firms sagging muscles, beautifies posture for a lovelier carriage, and gives her a more youthful-looking figure.’

Monday, July 7, 2014, 5:19 PM

Amini Sues Yuan Tai Enterprises - Again

Amini Innovation Corporation ("AICO") filed suit on June 30, 2014 in the United States District Court for the Central District of California (AICO's home court) again Yuan Tai Enterprises, Inc., a Texas corporation. The lawsuit involves two of several tools available to furniture manufacturers to defend its designs: namely patents and copyright. AICO is suing Yuan Tai again after Yuan Tai allegedly violated a 2007 agreement that settled earlier litigation. AICO is suing on 21 copyright registrations and 14 design patents. This approach highlights the one-two punch that copyright registrations and design patents provide. While the scope of protection under the copyright registrations may overlap with the design patent protection, there is a different standard for infringement (substantially similar (copyright) versus whether a consumer would confuse one with the other (design patent)). Armed with both copyright registrations and design patents, a furniture manufacturer has potentially strong tools at its disposal to enforce its rights. The case is: Amini Innovation Corporation v. Yuan Tai Furniture, Inc. a/k/a Yuan Tai Enterprises, Inc., Case No. 2:14-cv-05071. An image of one of the protected AICO pieces is shown below:

Sunday, April 27, 2014, 6:13 AM

NC Begins Work On Patent Troll Bill

Guest Authored by David BoazRecently, a joint legislative committee
sent a report to the North Carolina General Assembly that recommended passing
an anti-troll bill during the legislature’s 2014 Short Session. A copy of the bill may be found here. The
proposed bill, titled “Patent Abuse Bill,” would create a civil and criminal
cause of action aimed at preventing bad faith assertions of patent infringement.
The bill also make it extortion to obtain or attempt to obtain property through
a bad faith assertion of patent infringement. Extortion is a Class F felony
under North Carolina law.On the civil
side, the bill would make it an unfair or deceptive trade practice to assert patent
infringement in bad faith. Persons entitled to bring a claim are either the
N.C. Attorney General or a person called a “Target,” i.e., a person who
receives a demand letter that alleges infringement, is threatened with
litigation or sued for infringement, or has customers who have received a
demand letter asserting that the person’s product or service has infringed a
patent.The
bill provides a number of factors to aid in determining whether a patentee has
asserted a claim in bad faith, including whether the patentee compared the
claims in the patent to the accused product, whether the patentee made an
unreasonable licensing demand, whether the patentee knew or should have known
its claims would be barred by prosecution history estoppel, and whether the
patentee knew or should have known that its claims were meritless. Enumerated
factors indicating good faith include whether the patentee responds to an
accused infringer’s requests for information regarding the patent within a
reasonable time, whether the patentee substantially invests in the active
practice of the patent, and whether the patentee has demonstrated good faith
business practices or has been successful in previous efforts to enforce the
same/similar patent.If
a court finds a reasonable likelihood of a bad faith assertion, the court must
require the claimant to post a bond estimated to equal the costs and fees to
litigate the claim, unless the claimant has assets equal to the amount of the
proposed bond. The bill also provides for equitable remedies, costs, attorneys’
fees, and treble damages. If the claimant has no substantial interest in the
patent other than the assertion of infringement, a court is permitted to join
“Interested Parties,” whom the court can hold jointly and severally liable if
the claimant is unable to pay. An “Interested Party” is defined as a person
other than the claimant who is an assignee of the asserted patent, has a right
to enforce or sublicense the patent, or has a direct financial interest in the
patent.

In
his presentation, Sullivan will share steps that home furnishings companies
should take now to demonstrate their commitment to safe products and a safe
workplace. He also will discuss regulations, industry standards and warnings,
with an emphasis on identifying what is truly important.

Clients
turn to Michael Sullivan for
senior-level strategic guidance in mass tort product liability litigation and
other large-scale commercial litigation. Sullivan brings nearly three decades
of experience in “bet-the-company” cases. He serves in the role of “outside
General Counsel” or Coordinating Counsel, providing big-picture advice to craft
successful litigation strategies, increase efficiencies and contain costs.
Sullivan collaborates with clients on a wide range of high-end business
problems, including mass tort litigation.

Wednesday, October 2, 2013, 1:35 PM

Federal Circuit Clarifies Test for Obviousness of Design Patents

Who gets to decide when a design patent is obvious? There was some confusion on that topic until the Federal Circuit handed down its opinion in High Point Designs LLV v. Buyers Direct, Inc., No. 2012-1455 (Fed. Cir. Sept. 11, 2013) (a copy of the opinion can be found here).

In the opinion, the panel of Judges O'Malley, Schall, and Wallach confirmed that the obviousness of a design patent is to be determined through the eyes of an "ordinary designer," not an "ordinary observer." What's the difference? A big one actually. The ordinary design test requires the court to engage in a more sophisticated analysis that can rely on expert testimony (but does not have to). Typically when the obviousness analysis is elevated to a more sophisticated level, the "gap" between the prior art and the claimed design is easier to overcome because of the skill set and knowledge attributed to the hypothetical designer. This could make it easier to invalidate design patents on obviousness grounds. However, it most likely means courts will be less likely to rule design patents invalid on summary judgment as competing facts (and perhaps competing experts) will create fact issues for a jury to determine. In any event, this decision expressly cleans up the confusion created by International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 1990) that stated the obviousness determination was to be made by the "ordinary observer."

As for the facts in the High Point case, the Federal Circuit reversed summary judgment of obviousness of the slipper design below, Fig. 1 from the design patent in suit:

in view of the prior art Woolrich product:

The case was sent back to the district court for reconsideration in view of the clarified standard.

A final note: the court chided the district court for failing to translate the design of the patent into a verbal description. This runs counter to Federal Circuit precedent indicating that claim construction is not necessary with design patents. It will be interesting to see how this language is interpreted by the district courts. This panel clearly wanted more analysis from this district court judge. Some district courts may, however, take this recommendation too far and engage in unnecessary claim construction of a design patent.